IP glossary of terms

A trade mark can consist of a word, a logo, a picture, a colour, a sound, a 3D shape or a combination of any of these, provided it can be depicted graphically. Not all signs are registrable, however. The legislation lists a number of prohibitions which could prevent a mark from being registered. These grounds for refusal are divided into two categories: “absolute grounds” and “relative grounds”. Absolute grounds are those which relate to the intrinsic qualities of the mark.

The UK and EU Intellectual Property Offices examine all new applications against absolute grounds in order to ensure that they possess all the essential qualities of a trade mark. They will notably check that:

• The mark applied for meets the requirements for the definition of a trade mark.

• The mark is not devoid of distinctive character. A trade mark should have the capacity to distinguish the origin of the goods and/or services of one company from another. For instance, marks which are exclusively laudatory, such as PREMIUM, are usually refused on this ground.

• The mark is not descriptive or deceptive. If the mark has a meaning which is immediately understood as providing information about the goods and services applied for (whether it is about their quantity, quality, characteristics, purpose, kind and/or size), it will be refused as being descriptive. Example: ‘Biomild’ for yoghurt was refused for registration as it described its mild and organic characteristics.

• The mark is not a customary sign or indication.

• The mark does not consist of a shape which is required by the product itself.

• The mark is not in conflict with protected flags or symbols.

• The mark is not contrary to public policy or morality.

An account of profits is a type of remedy in intellectual property disputes. If the claimant is awarded an account of profits, it means that the infringer is required to pay the claimant all profits made on the sales of infringing goods. This remedy is to be distinguished from damages, which are awarded to compensate the claimant for its loss caused by an infringement of its intellectual property right.

In legal principles the doctrine of acquiescence is a common law principle. If a person is in knowledge (over a sustained period of time) of their rights being infringed and does nothing to intervene, they cannot later make a legal claim against the person who infringed them.

A person who “acquiesces” is a person who is considered to have given their consent to the action by another party on the basis that they have been aware of the other party’s action over a period of time but have not taken any measures to stop it occurring. The party who was aware of the action but did nothing to stop it is deemed to have “acquiesced”.

In the UK, Section 48 of the UK Trade Marks Act 1994 covers this aspect. Take for example a situation where Party A has an earlier trade mark or earlier right. Acquiescence is deemed to have occurred when Party A has for a period of five years or more been aware of the use by Party B of a registered trade mark and has taken no action against Party B’s use within that time. In that scenario Party A would be considered by a court or tribunal to have “acquiesced” and under such circumstances they would not be able to invalidate Party B’s later registration nor take any action against the use of the registered mark.

In the US acquiescence is referred to as “laches”. Regardless of the territory the applied principles are the same in that the longer a party is allowed to carry out an infringing act without intervention by the earlier right owner, then the stronger that party’s defence will be, provided they can show the earlier right owner knew for a significant length of time that the infringing act had been taking place but had taken no steps to curtail it within that time.

An affidavit is a formal written statement of fact which is signed and sworn to be true. It can be used as proof in a law court.

The person making the statement is known as the ‘affiant’. The statement has to be signed in front of a person authorised to administer affidavits, such as a solicitor, a judge, or a commissioner for oaths, who witnesses the authenticity of the signature. To make a false affidavit knowingly can be contempt of court and as such it is punishable by criminal sanctions.

Affidavits can be used to provide evidence in intellectual property disputes before the court or the UK Intellectual Property Office (although the Office will also accept a less formal declaration such as a Witness Statement).

Affidavits are also used in other countries, although the requirements may vary slightly. For instance, in the USA the proprietor of a trade mark registration has to file an Affidavit of Use (also called a “Declaration of Use”) together with a specimen showing that the mark is in use in the USA in order to maintain the registration.

See Renewal

The person or company that has filed an application to register a design, a patent or a trade mark is called an “applicant”. Once the intellectual property right has been registered, the “applicant” then becomes known as the registration “owner” or “recorded proprietor”.

The Artist’s Resale Right (ARR) entitles the author of a qualifying work of art (including paintings, engravings, sculpture and ceramics) to a royalty each time one of their works is sold through an auction house or by an art market professional (gallery).

The right to a royalty in ARR lasts for the same period as copyright, meaning that since January 2012 an artist (or their estate if deceased) are entitled to royalties for a period extending up to 70 years after the original author’s death.

There are certain exemptions to the right of an author to claim royalties in this way, for example, sales between private individuals would not qualify and neither would a sale other than through an art market professional. In addition, sales of a piece of work to a public, non-profit making organisation such as a museum would not qualify.

Resale rights in the UK are managed by collecting societies who collect payments which they then distribute to the artists as royalties.

This is a term usually used in relation to copyright protection. Artistic works are one of the types of original works protected by copyright. This category of works includes paintings, drawings, diagrams, maps, charts, plans, engravings, etchings, lithographs, woodcuts, photographs, sculptures, collages, works of architecture and works of artistic craftsmanship.

In order to be protected by copyright, artistic works need to be recorded or fixated on some medium and require originality. For a work to be original, it needs to be its author’s own creation rather than the copy of someone else’s work or dictated by technical functions.

An assignment is a transfer of ownership of property from one person or company to another. In terms of intellectual property, the property right in question could mean a trade mark, a patent, a design, copyright or any volume or combination of these.

Intellectual property assignments take place when an individual or company wishes to sell an existing business (or part of that business) to another party. The selling party is known as the “assignor” and the buying party is referred to as the “assignee”. When a business is sold the buying party will purchase from the selling party various “tangible” assets including, for example, stock merchandise, some real estate, raw materials etc. as well as the “intangible” assets which could include any patent, trade mark and design rights the selling party might hold. Often it is these intangible assets that are the most valuable part of a business and they sometimes have a greater value than the other assets. Consider the example of the Apple, Inc. trade mark logo for an apple silhouette with a piece bitten out from out. Conservative estimates have recently placed the value of that trade mark registration alone at around $140 billion.

An “attorney” is an American-English word referring to a “lawyer”. A lawyer by definition is a person educated in law and thereby qualified to give legal advice to a client.

In our profession we refer to patent attorneys and trade mark attorneys. Patent attorneys are by definition qualified to advise clients on patent law and likewise trade mark attorneys are qualified to advise on trade mark law. Up until a few years ago patent attorneys and trade mark attorneys were typically referred to as patent and trade mark “agents”, but the word “agent” has been phased out and replaced by “attorney”, bringing the UK into line with most overseas territories.

Sometimes we are asked: “Why is it so important to use an attorney?” In answer to this, attorneys have wide experience when it comes to drafting patent applications, filing trade marks and seeing everything through to a successful conclusion. There are many pitfalls to avoid when seeking official protection for intellectual property rights and doing so without experience or comprehensive know-how can often lead to mistakes, culminating in added expense and potentially damaging consequences for a business. Very simply, if you want an expert job, you will need an expert.

An “author” is defined as a person who originates or gives existence to anything. Books are very common works by authors and the person writing a book and bringing the written work into existence is defined as the author. The term “authorship” determines responsibility for what is created.

In terms of copyright law, the author is defined as the person who is the creator of a piece of work, be it a literary work, musical work, dramatic work or artistic work. The creation of a copyright work means that it is a work expressed in an original manner by its author. It is rare that something is totally unique but original works can be created by merging different ideas to create a new expression.

See Clearance Search

Bona vacantia (“goods without an owner”) is a legal concept of goods which are in limbo or which belong to nobody. In the UK if property is deemed ownerless then it passes to the Crown. By definition these goods can include assets of dissolved companies and other unincorporated bodies which were not removed prior to dissolution, as well as assets from the estates of the deceased without heirs or inheritors or where a will has not been made. The assets of dissolved companies pass automatically to the Crown.

In England & Wales the Bona Vacantia Division of the Government Legal Department (formerly the Treasury Solicitor’s Department) is responsible on behalf of the Crown for dealing with bona vacantia assets. Assets based in Cornwall may pass to the Duchy of Cornwall. In Scotland, the Queen’s and Lord Treasurer’s Remembrancer deals with bona vacantia assets.

Given the above, it is important to remember to remove intellectual property assets from a corporate or unincorporated body prior to winding up. Whilst bona vacantia property can be assigned from the Crown after the event, the Crown is not obliged to sell it and may sell it for full market value; the directors of a company who forget to remove trade marks, patents and designs from their company prior to its winding up may find themselves having to pay a substantial sum to recover “their” property. Further, the Crown gives no form of title guarantee when disposing of the property; the risk of buying bona vacantia property resides with the purchaser. This may be relevant, for example, when a third party has acquired a conflicting interest in the registered trade mark and in ignorance of the bona vacantia transfer. See Section 25 (3) of the UK’s Trade Marks Act 1994.

It may be possible to restore a company post dissolution in order to avoid a bona vacantia situation.

Branding can be traced all the way back to the Vikings. The origin of the word “brand” comes from old Viking and means “fire”. The Vikings marked their animal property by physically branding the animals with a red hot iron, searing an indelible stamp on the animals’ bodies. It represented ownership. A distinctive “brand” on a cow’s body by a Viking would proclaim to outsiders that “this is my cow”.  Nowadays we are much more humane of course in that we don’t use a red hot iron but it is common to see sheep, for example, “branded” by a patch marked with coloured dye on their woolly backs.

What hasn’t changed is that brands are all about “ownership”. A product with a brand seeks out its own place in the hearts and minds of a customer.

A “brand” is everything a trade mark is. It is also the style that you convey to the customer about your products. It is the attitude of your products. It is the way you talk to your customers. It is the overall impression you convey to the customers and how they see your product or products. It is almost a lifestyle.

Unique design, sign, symbol, words, or a combination of these, employed in creating an image that identifies a product and differentiates it from its competitors. Over time, this image becomes associated with a level of credibility, quality, and satisfaction in the consumer’s mind (see positioning). Thus brands help harried consumers in crowded and complex marketplace, by standing for certain benefits and value. Legal name for a brand is trademark and, when it identifies or represents a firm, it is called a brand name. See also corporate identity.

Read more: http://www.businessdictionary.com/definition/brand.html

A contract is an agreement, whether written or spoken, which is intended to be enforceable at law.  So long as the agreement contains the following it will be regarded as valid at law:

1. An offer and an acceptance
2. A statement that the parties intend to create a binding relationship
3. Consideration in some form in respect of the promise made
4. Legally capable parties
5. Genuine consent of the parties
6. That the agreement is legal

A breach occurs when one or more of the parties does not honour the commitment agreed in the relationship.

Examples of breaches could be:

• Failure to perform on time
• Failure to perform sufficiently
• Failure to perform as agreed
• Failure to perform at all
• Failure to pay enough, on time, or at all

A breach can be minor, material, fundamental or anticipatory.

• Minor: The contract has been performed substantially but a corner has been cut or performance has fallen short of what has been promised. The party disadvantaged by the minor breach can sue for actual damages only.

• Material: The breach is substantive and to the extent that permits the party disadvantaged by the breach to sue for damages or alternatively compel performance.

• Fundamental: The breach is so significant that the party aggrieved can terminate the contract and sue for damages.

• Anticipatory: The breach is inevitable by reason of the contracting party not being able to deliver on time, or sufficiently. The party aggrieved may sue for damages without waiting for the breach to occur.

Examples of breaches of contracts involving intellectual property would be:

• A trade mark licensee uses a trade mark format other than that agreed

• A patent licensee fails to pay sufficient royalties

• The owner of a registered trade mark fails to pay a renewal fee, thereby exposing a licensee to infringement proceedings

See Invalidation and Revocation

See Letter Before Action

See Plaintiff

When a new trade mark (brand) is adopted it is usually necessary to conduct a review of existing marks owned by others (registered or not) on the national register of interest. Ordinarily, if a product with a new brand name is to be launched in the UK it would be advisable to search the UK register.

The purpose of the search is to determine two factors: 1. is the new mark safe to use, and, 2. can the new mark achieve registration?

Is the new mark safe to use?

Whether the adoption and use of the new mark might infringe the rights of another individual or business. For example, if the search results show that the prospective mark is the same as or is similar to an earlier right on the national register (and covers the same or similar goods and services as the earlier right too) then it is possible that the use of the new mark might infringe the earlier right. Under those circumstances it would not be safe to use the new mark without further analysis and investigation of the earlier right. A trade mark attorney is qualified in assessing the risk that will be posed to a new mark when there are one or more potentially-conflicting earlier rights on the register. In extreme cases the risk might be considered too great and the adoption of a different mark would in that case be advised.

Can the new mark achieve registration?

Also, if an earlier, conflicting right is located by the search then this might block the path to registration for the new mark. This may be as a consequence of it being cited as potentially-conflicting mark during the application’s official examination, or perhaps as a result of the application being opposed by the earlier right owner later on.

Companies House is the official government organisation for incorporating and dissolving limited companies, as well as providing a registers of company information which is made publically available. Any business that wants to register its company name can do so at Companies House.

A common misconception is that the registration of a company name gives trade mark rights to that name. It does not. Provided that a business’s chosen name does not include any offensive or precluded words Companies House will register any name for a company so long as the identical name has not already taken. Therefore it would be perfectly feasible for a party to register the company name “Acme International Limited” even though names such as “Acme Limited” and “Acme UK Limited” may have already been taken by other parties. By registering and using a company name this does not accrue trade mark rights to the name. To do that, the name (e.g. “Acme”) would need to be used as part of the company’s product or service branding.

The registration of a company name in the UK is quite separate from the registration of a trade mark. It is very important to distinguish between the two as the rights derived from each one is very different.

The incorporation of a company is the legal requirement to operate as an organisation, separate from the individuals who own the company, and choosing a name for that entity is part of the company registration process. Company name registration should prevent the same or very similar name being registered as a company name only and does not provide any rights to use of that name as a trade mark in relation to goods and services or to prevent third party use of that name as a trade mark in relation to goods and/or services.

Such rights are derived from trade marks (registered and unregistered) only and so it is important to ensure that a search of the UK/EU Register (and marketplace) is carried out to establish the availability to use a new name as a trade mark (see Clearance Search) and to obtain a trade mark registration that can be relied upon to prevent others using the same or similar mark in relation to the same or similar goods/services.

There is no detailed examination conducted at Companies House before the acceptance of the name of a new company other than to ensure that there is correct usage of terms such as “limited”, “plc” etc and that it does not include any excluded words. In addition, Companies House checks that the proposed company name is not identical or the “same as” an existing company name on the Company Name Register. A name is considered “same as” if they are so similar as to confuse the public as regards which company is which. A list of generic corporate terms (such as “UK”, “company”) are identified and disregarded when comparing the proposed company name with existing company names.

It is possible for a trade mark owner to object to the registration of a company name within 12 months of registration by submitting a complaint including evidence of its earlier trade mark rights (registered or unregistered) and arguments that the company name will mislead the public by suggesting a connection between the two. The Secretary of State will consider the similarity of a company name and trade mark in isolation of any corresponding claim to trade mark infringement or passing off.

A contract is a legally binding written or spoken agreement between two or more parties which obliges those parties to do (or to not do) a certain act or acts. It is enforceable by law. If the contract is written then it will protect all named parties to it.

There are three essential elements to a contract:

• An offer, where one party offers something to another party. The party making the offer is sometimes called the “offeror”;

• Acceptance of that offer by the other party. A party on the receiving end of an offer is called an “offeree”;

• A valid consideration. This must be something of value which is exchanged between the parties as a result of the offer being made. Without any consideration there can be no contract.

A typical everyday example of a contract is when one party sells a car to another party in exchange for an agreed sum of money. In intellectual property matters a common form of contract is an assignment. For example, a party that is the named owner of a patent may choose to sell that patent to another party if the parties can agree on a price to be paid for it. The assignment document drawn up will name both parties and will specify the consideration that the buying party will give to the selling party in exchange for the patent.

If a European Union trade mark application is rejected or successfully opposed or similarly if a registration is cancelled, it may be possible, under certain circumstances, to convert the mark into one or more (but not all) national applications within the EU. This allows the original filing date to be maintained.

Due to the unitary nature of the EUTM system, any valid ground of rejection/cancellation must have effect on the entire EUTM, geographically, even if the grounds of rejection only apply in respect of a particular part of the EU. In such cases, conversion to national applications may only be requested in the EU territories where the rejection does not apply. For example, a mark may be considered descriptive/non-distinctive in French speaking territories only, in which case the whole EUTM must be rejected but conversion is possible to the non-French speaking national offices in the EU. Likewise, if an opposition is successful on the basis of two or three earlier national registrations in, say, France, Germany and Italy, conversion may take place in all territories except France, Germany and Italy. But if an opposition against an EUTM is successfully based on an earlier EUTM, no conversation is possible at all as the earlier right applies across the entire EU.

Once conversion is granted, the national procedures (and costs) differ from one EU state to another and may also depend on the status of the original application/registration. This can mean a full re-examination and publication for opposition purposes or a simple re-registration. In all scenarios, the successfully converted national application/registration maintains the original filing date (including Paris Convention priority date) and thus priority over any intervening rights.

It is possible to divide and partially convert an EUTM if the EUIPO has rejected the application for only some goods or services.

Copyright is a legal right that applies to any original work which is in some way recorded, either on paper, in physical form, or in analogue or digital formats. Recognition of copyright works were first introduced in the latter part of the 19th century by means of The 1886 Berne Convention. This later developed and became statute around the world. In the UK copyright works are governed by the provisions of the Patents, Designs and Copyright Act 1988.

Copyright works are broken down into four main components: artistic works, literary works, musical works and dramatical works.

In order to qualify as “original” a work must be new. However it does not need to be completely new, since the concept of originality in copyright lies in the expression of an idea, rather than the idea itself. Old ideas expressed differently – to a sufficient extent – can become new copyright works in their own right.

Copyright is an automatic right once a new piece of work is created by the author. At that time, it is always advisable for the author to assert his or her copyright by stating the year of creation and the individual or business name of the author against it, in conjunction with the copyright symbol “©“. For example, “© 2017 Stevens Hewlett & Perkins”.

Although copyright laws are jurisdictional in that territories around the world have their own laws governing it, many reciprocal arrangements are in place by virtue of various international agreements. This means that the rights of copyright holders in one country are likely to be recognised in another country, despite the two countries having their own very separate laws.

Damages are a form of monetary compensation awarded by a court in a civil action to an individual or other entity that has been financially injured as a result of the wrongful conduct of another party ( the “defendant“).

When awarding damages a court will attempt to measure in financial terms the extent of harm a plaintiff has suffered at the hands of a defendant’s actions. Damages are distinguishable from costs, which are the expenses incurred as a result of the court hearing an action and which the court may order the losing party to pay.

The purpose of damages is to restore an injured party to the position the party was in before they were harmed by the actions of the opposing party. Consequently, damages are generally regarded as being remedial (compensatory) rather than preventive or punitive. In serious cases however, additional punitive damages may be awarded by a court for particular types of wrongful conduct and for which the court would decide to penalise or otherwise make an example of a defendant. One further type of damage award is nominal damages, where a plaintiff who has suffered no substantial loss or injury but has nevertheless experienced an invasion of rights is awarded a token sum.

In order to recover damages from a defendant a plaintiff must satisfy the court that its financial injury suffered is one that is recognised by local law as warranting redress. Further, the plaintiff must show that actual harm has been sustained.

A database right is a form of intellectual property introduced by The Copyright and Rights in Databases Regulations 1997, with effect from 1 January 1998. This Act made amendments to the existing Copyright, Designs and Patents Act 1988 and extended copyright protection to databases, creating “database rights”.

Unlike copyright, there is no requirement for a database to have originality in order to qualify as a database right. Instead, a database right will automatically subsist on the condition there has been a “substantial investment in obtaining, verifying or presenting the contents” of the database. Despite having its own protection under The Copyright and Rights in Databases Regulations 1997, a database might also still qualify for protection as a literary work in accordance with UK copyright law.

A database right extends for 15 years from the end of the calendar year in which the database is completed. If the database is made available to the public before the end of that period, the duration will expire 15 years from the end of the calendar year in which the database was first made available to the public.

During its period of protection, an owner’s database right will be infringed by another party if that party, without the owner’s consent, “extracts or re-uses all or a substantial part of the contents of the database“, which may be done either all at once or by “repeated extractions” of “insubstantial” parts. In this case “substantial” is deemed to mean “substantial in terms of quantity or quality or a combination of both“.

Defamation is defined as a verbal or written expression giving a view or statement about an individual which, if proved to be false, is deemed to harm the reputation of the individual to whom it has been directed.

When considering whether defamation has taken place, consideration must be given to the effect a defamatory statement has upon right-thinking members of society in general and how their thoughts towards the individual are affected.

Defamation is deemed to have taken place if the right-thinking members of society are given cause to think about the affected person in any of the following ways once they have heard or read the statement:

• It is a discredit to the person
• It causes the regard in which the subject is held by others to be lowered
• It causes the person to be shunned or avoided
• It causes the person to be the subject of hatred, ridicule or contempt

A defendant is the name given to a person or entity against whom a civil action is brought by a “plaintiff” (or “claimant”) that seeks civil relief. In intellectual property cases a defendant is the party that is accused of infringing the patent, trade mark or design belonging to the plaintiff. If the court decides the defendant is held to infringe the plaintiff’s property then an order for damages will be issued which forces the defendant to compensate the plaintiff for their loss. A losing defendant would also have to bear a significant portion of the court costs.

In criminal matters a defendant will face an action brought not by a plaintiff but most often by a public prosecutor. On occasion a private criminal prosecution can be brought against the defendant.

A “design patent” is the term used in the USA for a registered design.  US design patents have a term of 15 years from the date of grant, and there are no requirements for renewal.

In the UK, the term “design right” usually refers to UK unregistered design right, but it can also refer to a registered UK registered design right as well as (currently) European registered and unregistered design rights, the latter for the time being at least include the UK.

Design right essentially protects the shape or configuration of a three-dimensional object, rather than methods or principles of the object’s construction. It will subsist if the design is recorded in permanent form, such as for example, if the design is reproduced on paper or if an article is made according to that design. Documents detailing a design are also capable of qualifying for protection as artistic works under  copyright law.

Design right will not apply if a design is not novel or original. To qualify as original the design in question must have individual character and not be commonplace in its related field.

A registered design right provides its owner with an exclusive right of up to 25 years duration. Unregistered design right is more akin to copyright in that it attaches automatically when a new design is created. In the UK unregistered design right lasts for 10 years after an object bearing the design is first sold or 15 years after it was created – whichever is the earliest. Under EU law, an EU unregistered design right lasts for three years from the date on which the design is first made available to the public in the EU.